Is it possible to register an invention that has already been published?

Patent registration is a useful measure for individuals and organizations to protect their inventions and avoid being copied by competitors. However, to be able to register for patent protection, the invention must also meet certain conditions, one of which is the requirement of novelty. However, there are cases where enterprises have failed to publish their inventions before the invention is registered for protection. So, is it possible to register an invention that has already been published? Viet An Law will be presented in the following article.

Legal basis

• Law on Intellectual Property 2005 amended and supplemented in 2009, 2019, 2022

Some related concepts

What is an invention?

An invention is a technical solution embodied by a product or process, to solve a particular problem by applying the laws of nature and the scientific method. This process requires meticulousness and in-depth research, in order to come up with new ideas that bring many benefits to the community.

What is the novelty of the invention?

According to the provisions of the current Intellectual Property Law, an invention is considered new if it does not fall into one of the following cases:

• The invention was publicly disclosed by any use, written description or any other form, at home or abroad, prior to the filing date of the patent application or prior to the priority date if the application have priority right;
• Disclosed in another patent application with an earlier filing or priority date but published on or after the filing or priority date of that patent application.

Conditions for registration of patent protection

In order to be able to protect an invention, an invention must meet certain conditions, specifically as follows:

• For inventions to be protected in the form of a patent, the invention must satisfy three conditions: novelty, inventive nature and industrial applicability.
• For inventions protected in the form of utility solution patents, the invention must simultaneously satisfy two conditions: novelty and industrial applicability.

Is it possible to register an invention that has already been published?

According to the provisions of Article 60 of the current Intellectual Property Law, an invention is considered novel if it meets all of the following conditions:

• The invention shall not be publicly disclosed through use, written description or otherwise, in the country or abroad, prior to the filing date of the patent application or prior to the priority date (if any).
• The invention is not disclosed in other patent applications with an earlier filing or priority date, but information about the invention is published on or after the filing or priority date of this patent application.
• The invention has been disclosed to a few people, but to a limited number of people, and these people are obligated to keep the invention secret.
• The person who has the right to register for protection of an invention under the provisions of the Intellectual Property Law or the person who has information about the invention directly or indirectly from that person publicly discloses the invention. But the patent application is filed in Vietnam within twelve months from the date of disclosure.

Thus, there is only one case related to the published invention. Accordingly, if the invention has been published before but falls into one of the following cases, the same invention mentioned in the following registration can still be registered for protection:

• The invention is mentioned in two different applications filed by the same owner.
• The invention is published according to the application for registration in a foreign country, without the scope of protection in the territory of Vietnam.

Some frequently asked questions about inventions and patent registration

Which agency is the competent authority to receive patent applications?

The competent authority to receive the application for registration of patent protection is the National Office of Intellectual Property, so the application for registration of patent protection can be filed at:

• National Office of Intellectual Property (headquarter in Hanoi)
• Representative offices of the National Office of Intellectual Property in Da Nang and Ho Chi Minh City.

How can I file an application for patent protection?

Trademark registration applications can be filed in two ways: by direct or by post.

How long does it take to process a patent application?

• Formality examination time: 01 month from the date of application
• Publication of applications: within the 19th month from the priority date for applications enjoying priority right or the filing date. If the application does not have a priority date or within 2 months from the date of acceptance of the valid application, whichever is later.
• Substantive examination: no more than 18 months from the date of application publication
• Issuance of a protection title: 15 days from the date of full and timely payment of fees and charges
• Publication of the decision to grant a protection title in the Official Gazette of Industrial Property: 60 days from the date of issuance of the decision

What does a patent application include?

According to the provisions of the current Law on Intellectual Property, an application for registration of patent protection includes the following documents and papers:

• 02 copies of registration declaration.
• 02 patent descriptions.
• Documents confirming the right to registration (in case the applicant enjoys the registration right of another person).
• Documents proving that the establishment enjoys priority right (in case there is a request for priority right).
• Copy of fee payment voucher.
• Power of Attorney for Law Viet An (in case of application through authorization).

How long will the validity of the patent last?

According to the provisions of the current Intellectual Property Law, the protection period depends on the specific form of protection.

• For the case of protection in the form of a patent, the protection period starts from the date of grant of the patent. Once granted, the invention is protected for 20 years. This means that during this period, the patent holder has the exclusive right to manufacture, use, and license the production to others. This 20-year period is counted from the date of application, marking the beginning of the process of creating and developing an idea until it is accepted.
• In the case of protection in the form of a utility solution patent, the protection period also starts from the date of grant of the patent. However, the protection period for this type will be shorter, lasting only 10 years from the filing date.

Can I extend the validity of my patent?

According to the provisions of the current Intellectual Property Law, the extension of the validity of protection titles for inventions cannot be implemented. The holder of a protection title can only maintain the validity of the title through the payment of a maintenance fee. Issues related to fees and procedures for maintaining and extending diploma validity will be detailed by the Government.

In case there are many patent applications filed, how will it be resolved?

In case there are many identical or equivalent patent applications, the provisions of Clause 1 of Article 90 of the Intellectual Property Law stipulate that a protection title will only be granted for the invention in a valid application containing priority date or the earliest filing date among those that meet the conditions for a protection title.

Customers who have needs related to Intellectual Property Law, patent protection, please contact Viet An Law for the best support!